To: | Life Spine, Inc. (bruce@im-iplaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86632576 - SIMPACT - LSP116 |
Sent: | 3/28/2016 6:17:45 PM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86632576
MARK: SIMPACT
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Life Spine, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 3/28/2016
THIS IS A FINAL ACTION.
This office action responds to the applicant’s communication filed on February 26, 2016 in which the applicant argued in favor of registration over the cited prior registration. The applicant’s arguments have been carefully considered, but are found to be unpersuasive. For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration Nos. 3797518 and 3797519. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
LIKELIHOOD OF CONFUSION – FINAL
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
The applicant’s mark is SIMPACT for “Orthopedic and neurosurgical implants and instruments, namely, orthopedic joint implants, orthopedic and neurosurgical implants consisting of artificial materials, spinal implants composed of artificial material, namely, spinal rods, spinal screws, spinal hooks, spinal plates, vertebral interbody spacers, vertebral interbody spacers, spinal cross-connectors and spinal screw assemblies, surgical implants comprising artificial material, and associated surgical instrument sets and surgical instruments for use in orthopedic and spinal surgery” and the registered marks are SIMPACT & design and SIMPACT, both for “Dental Implants and accessories, namely, dental bridges, crowns, and inlays; Odontological implant, namely, dental implants, artificial teeth, and dental implant attachments; Surgical, medical, dental and dental implant instruments and apparatus, namely, abutments, ratchets, cleaning brushes for ratchets, service instruments for ratchets, torque control device for ratchets, adapter for ratchets, anchor drivers, screwdrivers, screwdriver inserts, screws, pins, caps, burs, roundburrs, drills, cooling rings for drills, cleaning instruments for drills, depth gauges, taps, tapes, tweezers, anchors, cylinders, bone graft systems, namely, synthetic biologic products for the purpose of grafting the operative site for the placing of dental implants, ampoules, adapters, laboratory handles, insertion instruments, scalpels, blades, sutures, machines for tapping and inserting implants, torque control devices, holding keys, containers for medical waste and aerosol dispensers for medical use, surgical cases, surgical cassettes, surgical kits, namely, drills, measuring devices, and drivers for placement of dental implants, instrument trays, instrument dispensers, divider for trays, dishes for trays, cleaning instruments, cleaning cassettes, auxiliary instruments for diagnosis, implant distance indicators and surgical planning aids, namely, X-ray reference sphere, X-ray templates, copings, polishing protectors, extension shells, plastic necks, transfer aids, activators and deactivators for bar matrices, extractors, rings, springs, inserting devices, bite registration aids, applicators, positioning cuffs, denture magnets, display stands, jaw models, instruments for the care and the maintenance of implants; Artificial limbs, dental implants, prosthetic and filling materials, namely, artificial materials for use in the replacement of tissue, dental prostheses and parts thereof for dentistry. Surgical tools, namely, delivery tools used to place implants; Implantable dental prostheses and hydroxylapatite cylinders, cones and various shapes for tooth root replacement.”
Comparison of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
The applicant’s mark SIMPACT is identical in sound, appearance and meaning to the registered mark SIMPACT. SIMPACT is also highly similar to the registered mark SIMPACT & design because the literal portions of the marks are identical and the overall marks are identical in sound. Consumers are likely to believe all the implant related goods marketed under the term SIMPACT originate from the same source.
The applicant argues, “While applicant’s mark, in a strict sense, is not identical to the registered mark since applicant’s mark capitalizes the ‘I’ in its mark, applicant does not disagree that applicant’s mark is generally identical in sound, appearance and commercial impression.” See Response p. 2.
Comparison of the Goods
The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
In this case, both applicant and registrant use their marks in connection with surgical implants and instruments.
The applicant argues, “while applicant’s goods and registrant’s goods can both be generally termed surgical implants and instruments, applicant’s goods are for the medical field of orthopedics (particularly the spine), while registrant’s goods are for the medical field of dentistry. These medical fields are completely separate. Orthopedic spine surgeons do not practice dentistry, while dentists do not practice orthopedic spine surgery. As such, the goods are likewise not related.”
The examining attorney disagrees. Orthopedic and dental implants are closely related because implants used in both fields of medicine are commonly made of the same material and often originate from the same source. See attached Internet evidence and third party registrations for use in connection with the both dental and other medical implants including orthopedic implants.
The marks SIMPACT and SIMPACT & design and SIMPACT are similar and the goods/services of the parties are related. Therefore, confusion as to the source of the goods is likely and the refusal under Trademark Act Section 2(d) is maintained and made final.
PROPER RESPONSE TO FINAL ACTION
(1) A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
/Barbara Brown/
Trademark Examining Attorney
USPTO Law Office 116
TEL 571-272-9134
FAX 571-273-9116
barbara.brown@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.